Increase in Publication Fees for Trademark Recordals in Saudi Arabia

The Saudi Trademark Office has recently issued an official circular, announcing a drastic increase in the official publication fees for the following trademark recordal actions:

Recordal of Assignment or Merger from 500 SAR to 1500 SAR(405 USD)

Recordal of Change of Name and/or Address from 500 SAR to 1500 SAR(405 USD)

Recordal of License Agreement or cancellation of the same from 1000 SAR to 2000 SAR(540 USD)

Recordal of Mortgage Agreement of a trademark or cancellation of the same from 1000 SAR to 3000 SAR(810 USD)

Amendment of goods and services by removing or restricting the list of goods and services from 1000 SAR to 1500 SAR(405 USD)

Amendment of form of the mark for trademark registration from 500 SAR to 1500 SAR(405 USD)

Cancellation of a trademark registration by owner 3000 SAR(810 USD)

Change of name and address of agent for service from 500 SAR to 1500 SAR(405 USD)

The above drastic increase in the official publication fees will come into force from February 19, 2017 and will not be applied retroactively for recordals already filed with the Trademark Office.

It is worth mentioning that the recordal of change of name and address of agent for service when taking over a trademark application or registration by another agent is optional as of now.

Accordingly, please be advised that Maddock & Bright IP Law Office will amend its schedule of charges to reflect the increase maintaining our professional fees considering the excessive official fees.

New Amendments in ARIPO

7 February 2017

The African Regional Intellectual Property Organization (ARIPO) recently amended the Harare Protocol on Patents and Industrial Designs and announced an increase in the official fees.

The amendments entered into force on January 1, 2017 the changes were announced at ARIPO’s 40th Administrative Council Session (Harare, Zimbabwe) in December 2016.

Some of The Notable Amendments Include:

An increase in official fees including new fees for additional or existing services and additional provisions for post-grant amendments were also announced along with restoration of rights for patents, utility models and industrial designs.

New Jurisdictions in Kuwait

6 February 2017

Further to the news alert informing that the Kuwait Trademarks Office stipulation for the payment of official publication fees for the recordal of change of name, address, assignment and actions in the official gazette, we have been informed that the registry will now start issuing separate certificates for the renewal and recordals matters. The earlier practice was to endorse on the backside of original certificates with the undertaken renewal and recordal actions.

Adoption of Law No. 6769 in Turkey

5 February 2017

The adoption of Law No. 6769 on the Protection of Industrial Property Rights has been announced in Turkey.

The new Law was passed before the Grand National of Assembly on December 22, 2016 and entered into force on the date of publication in the official gazette on January 10, 2017. It repeals and replaces the Decree Laws on Patents and Utility Models, on Trademark and Service marks, on Industrial Designs, and on Geographical Indications. The new law stipulates the restructuring of the internal organization of the Turkish Patent Institute that was aptly renamed the Turkish Patent and Trademark Office.

The main changes in the Law include the acceptance of co-existence agreements and letters of consent, thereby enabling the applicants to overcome relative grounds rejection with the prior right owner’s approval. With respect to oppositions, the Law makes a clear distinction between well-known trademarks registered in Turkey and those which are not, thus; the owner of an unregistered well-known trademark will, therefore, be able to oppose applications for a mark identical or similar to a well-known trademark. Furthermore, the Law stipulates that if the owner of the opposed application can claim that the opposing party has not used its trademark for more than five years without a justified reason after its registration date and in case of this defense, the Turkish Patent and Trademark Office will request the opposing party to provide substantial evidence regarding the use of the trademark. If they are not provided, the opposition will be rejected.

An increase in the official fees for IP matters has also been announced. The increase also applies to EP Validation, search and examination, and the annuity maintenance fees for patents and utility models. Until the implementation regulation of the new laws is issued we expect further developments and shall update you accordingly.

New Jurisdictions In Qatar

1 February 2017

The Qatari Trademark Office will stop following the 7th international classification of goods and services in which services under classes 43, 44 & 45 were classified under class 42.

Therefore, as per an official email notification received today form the Qatari Trademark Office informing us that international classes 43, 44 and 45 of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) will be adopted as of February 12, 2017 for all new applications.

In the same context, please be noted that Qatar follows a single class application system. A separate application should be filed with respect to each class of goods or services and a separate sum of official fees is to be paid for each class.

New Turkish IP Code is Now in Force

19 January 2017

The New Turkish Industrial Property Code (The IP Code) entered into force on January 10, 2017.

The IP Code replaces the Decree-laws pertaining to the protection of trademarks, patents, geographical indications and designs, all of which date back to 1995, by bringing all those rights together within the ambit of a single Code.

Among other reforms, the trademark chapter includes changes which achieve greater compliance with the relevant European Union directives. The major changes related to the trademarks are as follows:

The graphical representation criteria for signs to be registered as a trade mark has changed to “signs capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. So the terminology has been aligned to that of the EU Trade Mark Directive.

The terminology for distinctiveness criteria has been changed to resemble EU trade mark legislation.

The “co-existence principle” has been introduced into Turkish Trade Mark Law. Accordingly, co-existence agreements and letters of consent will be accepted in overcoming senior identical or indistinguishably similar trade marks from being an absolute ground of refusal by the Turkish Patent and Trade Mark Institute ex-officio.

The opposition term has been shortened to 2 months (from 3 months).

During the opposition proceedings before the TPI, opponents have to prove genuine use or provide justified reasons for non-use of their trademarks that are the basis for opposition and registered at least for duration of five years, if requested by the applicant.

The opposition shall be rejected if such use or justified reason for non-use cannot be proven. This request can also be used as a defence in an infringement action.

Bad faith has been added into the code as a separate ground for opposition and cancellation.

Signs that contain geographical indications cannot be registered as a trade mark.

The cancellation actions due to non-use will be dealt by Turkish Patent and Trade Mark Institute. However, the enforcement date of this provision has been postponed for 7 years with an additional provision. So until 2023, the cancellation actions need to be filed before the IP Courts.

The new IP Code entered into force on January 10, 2017 except some of the provisions of which the enforcement has been delayed, for the trade mark applications which were filed before the enforcement date of the new IP Code, the earlier legislation, the Decree-Laws pertaining to the protection of Trade Marks, will still apply until their registration process will be completed.

Jurisdiction Update in Kuwait

18 January 2017

The Kuwait Trademarks Office has stipulated the payment of official publication fees for the recordals of change of name, address, assignment and actions in the official gazette with effect from January 1, 2017 and it will also be applied retroactively for all such actions applied since increase in official fees which came into effect on January 1, 2016.

Also, there has also been a verbal circular issued by the Trademark Office stating that it is mandatory to submit a simple copy of the certificate of incorporation or certificate of incorporation without notarization or legalization. Earlier there was only the need for the legalized power of attorney for filing of trademark applications.

Jurisdiction Update in Iran

17 January 2017

The Iranian Trademarks Registrar has revised the requirements for filing of a trademark application in which a copy of the certificate of incorporation or extract of a commercial register has to be now legalized up to Consulate of Iran abroad.

Under the old practice, the Iranian Trademarks Registrar was not strict in requiring such legalization of the certificate of incorporation and it was a rarely requested requirement and a scanned copy used to be sufficient in this regards. However, now the Iranian Trademarks registrar has applied this requirement strictly and a copy of the certificate of incorporation or extract of commercial register has to be legalized up to the Iranian Consulate abroad for new trademark applications and oppositions and must be submitted within 60 days from filing date provided that a simply copy is presented at the time of filing, this deadline may be extended by a period of extra two months.

Appeal to Trademark Committee Procedures in Saudi Arabia

16 January 2017

Pursuant to the implementation of GCC- Trademark law in Saudi Arabia the Trademark Committee is active from 1 January, 2017. Although the appeals filed earlier to this date were accepted but no actions were initiated by the Trademark Office.

The following points are to be noted if an applicant is willing to file an appeal/opposition before the Trademark Committee:

The Original Power of Attorney must be legalized from the Ministry of Foreign Affairs & Ministry of Justice in Saudi Arabia. (Super Legalization)

Any additional documents in foreign language in support of the appeal/opposition must be submitted together with Certified Arabic Translation.

If a mark is refused on the basis similarity/identical, a certified copy of the cited mark must be obtained and submitted together with the appeal.

Fee Table

Services

Official Fee (USD)

Filing an Appeal Before The TMC

270.00

Filing an Opposition Before The TMC

535.00

Super Legalization of Power of Attorney

10.00

Obtaining Certified Copy of Cited Mark

270.00

Jordan PCT Accession

15 January 2017

The Jordanian Council of Ministers has voted for the accession of Jordan to the Patent Cooperation Treaty (PCT).

Accordingly, the Council empowers and entrusts the Foreign Ministry with depositing its instruments with the WIPO thus ushering a new era of patent procurement in Jordan.

It is expected that Jordan accession to PCT will be finalized by April 2017. However, the date on which the Treaty will go into force is yet to be determined.